1.

State Law Doctrines

a. Misappropriation, Unfair Competition,

Trade Secrets, Right of Publicity 2. Trademarks a. Federal vs. State Claims b. Theories of Protection i. Passing Off Likelihood of confusion ii. Dilution c. Requirements for Protection i. 1051(a) & (b) use & ITU ii. Distinctiveness 1. Exceptions to Distinctiveness a. Deceptive Matter 1052(a) b. Geog. deceptive 1052(e)(3)

ii. Works Made for Hire 1. Fact ? agency law iii. Transfer of ownership & excl. rights

iv. Collective Work 201(c)

v. Derivative work

g. Fair Use 107

i. Unpublished works ii. Parody

h. Secondary Liability vicarious & contrib..

i. j. Remedies i. Non-monetary ii. Monetary Infringement

d. Types of Marks service, cert, collective

e. Functionality Doctrine f. Registration i. Benefits 1. Constructive notice - 1072 2. Prevents cancellation - 1065 3. Prima facie 1115(a) a. Rebuttable 1115(b) b. Conclusive after 5 1115(b) g. Challenging Marks i. Application process 1067 ii. Concurrent use 1067 iii. Infringement 1115(a) & (b), 1114 iv. Cancellation 1064 & 1065 h. Geographic Boundaries concurrent use i. Product and Service boundaries dilution j. Defenses i. Fair Use ii. Nominative Fair Use k. Remedies l. Secondary Liability m. Infringement n. Trade Dress 3. Patents a. Subject matter 101, 161, 171 i. Non-naturally occurring matter too

Trademark Laws 1064 - A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125 (c) of this title, by the registration of a mark on the principal register established by this chapter, ***: (1) Within five years from the date of the registration of the mark under this chapter. (2) Within five years from the date of publication under section 1062 (c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (4) ***. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies: 1065 Except on a ground for which application to cancel may be filed at any time under paragraphs (3) & (5) of section 1064 of this title, & except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration & is still in use in commerce, shall be incontestable: Provided, That (1) there has been no final decision adverse to registrants claim of ownership of such mark for such goods or services, or to registrants right to register the same or to keep the same on the register; and (2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and (3) an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) of this section; and (4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered. 1115(b) To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrants ownership of the mark, and of the registrants exclusive right to use the registered mark in commerce. *** Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects: (1) Registration or incontestable right obtained by fraud. (2) Mark has been abandoned by registrant (3) Mark is being used w/o permission or privity so as to misrepresent source. (4) Infringing mark is descriptive of and used fairly and in good faith only to describe the goods or services of a party or their geog. origin (5) *** (6) Infringing mark was registered prior to the registration under this chapter or publication under 1062(c) and not abandoned. (7) Mark is used to violate antitrust laws (8) Mark is functional (9) Equitable principleslaches, estoppel, and acquiescenceare applicable. Patent Laws 102 - A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention, or (d) the invention was first patented or caused to be patented, or was the subject of an inventors certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventors certificate filed more than twelve months before the filing of the application in the United States, or (e) the invention was described in (1) an application for patent, published under section 122 (b), by another filed in the United States before the invention by the applicant for patent or *** (f) he did not himself invent the subject matter sought to be patented, or (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such persons invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such persons invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. 103(a) - A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented & the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Copyright Laws 102(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. 106 - Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission. 107 - Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, ***, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. 201(c) Contributions to Collective Works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. Work made for hire - (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

ii.
b.

Exceptions L.A.P.

c.

d. e. f.

But application of algorithms ok iii. Includes business methods Novelty 102 i. Known or used 102(a) ii. Public use or on sale 102(b) iii. Priority Non-obviousness 103 i. As a whole ii. Question of fact 1. Scope & content of prior art 2. Differences b/t invention and p.a. 3. Level of ordinary skill 4. Secondary factors iii. Level of ordinary skill B.S. at least iv. Prior Art 1. Includes pending apps 2. Make believe time bar 3. Corporate research teams Utility 101 i. Joint contributions Enabling Disclosure 112 Procedures i. Prosecution ex parte 1. Attys, claims, prior art, SoR 2. Doctrine of Prosecution Laches Inter partes

1.

ii.

1. 2.

Reexamination

Fraud Inequitable Nondisclosure

g. Rights i. Exclusion 154(a) ii. Repair vs. reconstruction iii. Experimental Use exception iv. Acts abroad v. Inducement Liability vi. Staple vs. Non-staple 271(d) & (e)

vii.

Estoppel Licensee and Assignor h. Remedies

Injunctions preliminary & permanent Infringement i. Literal infringement ii. Doctrine of Equivalents iii. Defense of Prosecution History Estoppel 4. Copyrights a. Acts b. Reliance Party Provision 104A(d)(3) c. Registration 410(c), 412, 411(a) d. Subject Matter expressions, not ideas e. Originality i. Compilations 1. Misappropriation st. law gap filler ii. Question of Fact or Law 102(a) & (b) i.

i. ii.

Lost profits but-for & reas. foreseeable

f.

Ownership initially vests in author(s)

i.

Joint Works tenants in common

( 1 ) H i r i n g p a r t y s r i g h t t o c o n t r o l t h e m a n n e r & m e a n s b y w h i c h t h e p r o d u c t i s a c c o m p l i s h e d ( 2 ) S k i l l r e q u

ired (3) * The source of the instrumentalities & tools (4) The location of the work (5) The duration of the relationship b/t the parties (6) * Whether the hiring party has the right to assign additional projects (7) The extent of the hired partys discretion over when & how long to work (8) Method of payment (9) Hired partys role in hiring & paying assistants (10) Whether the work is part of the regular business of the hiring party (11) Whether the hiring party is in business (12) * The provision of employee benefits (13) * Tax treatment of the hired party Passing Off protects * 1st to use in comm.. * against competitor * likely to confuse Dilution * famous mark * tarnishment or blurrin * mental association Suggestive * creativity or cleverns * other sellers not likely to use